national arbitration forum

 

DECISION

 

Swisher International, Inc. v. VistaPrint Technologies Ltd

Claim Number: FA1209001463430

 

 

PARTIES

Complainant is Swisher International, Inc. (“Complainant”), represented by Paolo A. Strino of Lucas & Mercanti LLP, New York, USA.  Respondent is VistaPrint Technologies Ltd (“Respondent”), Bermuda.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <swishasweetys.com>, registered with Tucows, Inc.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Tyrus R. Atkinson, Jr., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 19, 2012; the National Arbitration Forum received payment on September 19, 2012.

 

On September 20, 2012, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <swishasweetys.com> domain name is registered with Tucows, Inc. and that Respondent is the current registrant of the names.  Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On September 20, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 10, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@swishasweetys.com.  Also on September 20, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On October 17, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

A.   Complainant Alleges

1.    Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its SWISHER SWEETIES mark (Reg. No. 3,088,359 registered May 2, 2006).

2.    Complainant has used the SWISHER SWEETIES mark since at least January 2004.

3.    The website resolving from Respondent’s <swishasweetys.com> disputed domain name is not an operational website.

4.    Respondent’s resolving website displays links which reroute Internet users to a directory of cigar vendors and tobacco products.

5.    Respondent’s <swishasweetys.com> domain name is confusingly similar to Complainant’s SWISHER SWEETIES registered mark.

6.    Respondent has no rights or legitimate interests in the <swishasweetys.com> domain name.

7.    Respondent does not appear to be commonly known by the <swishasweetys.com> domain name.

8.    The <swishasweetys.com> domain name was registered in bad faith.

9.    Respondent is attempting to attract and confuse Internet users as to the association Complainant has with the <swishasweetys.com> domain name.

 

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

1.  Complainant has rights in its SWISHER SWEETIES mark.

2.  Respondent’s <swishaseetys.com> domain name is confusingly similar to Complainant’s mark.

3.  Respondent has no rights to or legitimate interests in the domain name.

4.  Respondent registered and used the domain name in bad faith.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

 

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1)  the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)  Respondent has no rights or legitimate interests in respect of the domain name; and

(3)  the domain name has been registered and is being used in bad faith.

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

 

Identical and/or Confusingly Similar

 

Complainant contends that it has rights in its SWISHER SWEETIES mark (Reg. No. 3,088,359 registered May 2, 2006) pursuant to Policy ¶ 4(a)(i) based on its registration with the USPTO. In cases preceding the current one, panels have frequently found that registration with the USPTO or other governmental offices demonstrates rights in a given mark. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007) (“The Panel finds that Complainant has established trademark rights in the CLEAR BLUE marks through introduction of the certificates for its U.S. registration for those trademarks”). Previous panels have found that to establish rights in a mark, a complainant need not register the mark in the country in which respondent resides or operates. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the complainant has rights to the name when the mark is registered in a country even if the complainant has never traded in that country). Based on Complainant’s registrations with the USPTO, the Panel finds that Complainant has established rights in its SWISHER SWEETIES mark pursuant to Policy ¶ 4(a)(i).

 

Complainant claims that Respondent’s <swishasweetys.com> domain name is confusingly similar to Complainant’s SWISHER SWEETIES mark. The Panel  notes that Respondent’s <swishasweetys.com> domain name contains misspelled, phonetically similar versions of the two components of complainant’s mark. The Panel notes that Complainant’s SWISHER mark is spelled “swisha” in Respondent’s disputed domain name, removing the “er” and adding an “a.” The Panel further notes that Complainants SWEETIES mark is spelled “sweetys” in the disputed domain name, removing the “ie” and replacing it with a “y.” The Panel also notes that Respondent removes the space between SWISHER and SWEETIES. Furthermore, the Panel recognizes that in Respondent’s <swishasweetys.com> domain name there is an added generic top-level domain (“gTLD”) “.com.” Panels have often found that these variations are insufficient to differentiate a disputed domain name from a Complainant’s registered mark. See Yokohama Tire Corp. v. Jones, FA 739888 (Nat. Arb. Forum Aug. 3, 2006) (“The Panel finds that the mere elimination, misspelling and addition of terms to Complainant’s mark in the <yokahamatires.com> domain name is not sufficient for Respondent to distinguish the disputed domain name from the Y YOKOHAMA mark, especially because the disputed domain name remains phonetically similar to the mark.”); see also Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). As a result of this analysis, the Panel finds that Respondent’s <swishasweetys.com> domain name is confusingly similar to Complainant’s SWISHER SWEETIES mark pursuant to Policy 4(a)(i).

 

Rights or Legitimate Interests

 

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

 

Complainant asserts that Respondent is not commonly known by the <swishasweetys.com> domain name under Policy 4(c)(ii). The Panel notes that according to the WHOIS information for Respondent, the registrant is listed as “Tucows, Inc.” Complainant further claims that it has not licensed or otherwise permitted Respondent to use any of its marks in any way. Based on this, the Panel determines that Respondent is not commonly known by the <swishasweetys.com> domain name or Complainant’s SWISHER SWEETIES mark under Policy 4(c)(ii). See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).

 

Complainant asserts that Respondent has created an inoperative website resolving from the <swishasweetys.com> domain name. Complainant also asserts that Respondent’s <swishasweetys.com> domain name  resolves to a website featuring a directory of vendors of cigars and tobacco products. Despite Complainant’s contentions of inactivity, the Panel notes that the screen shot provided by Complainant displays various links to third party vendors. See Annex 6.  The Panel decides that Respondent’s <swishasweetys.com> domain name resolves to a website featuring generic links to third-party websites, some of which Complainant alleges directly compete with complainant’s business. The Panel finds that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name. Previous panels have found that using a confusingly similar domain name to profit from links for third parties competing with a complainant’s business is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).  The Panel finds that Respondent’s resolving website features competing third party links.  The Panel finds that Respondent’s use does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial fair use under Policy ¶ 4(c)(iii).

 

Registration and Use in Bad Faith

 

Complainant asserts that Respondent has registered the <swishasweetys.com> domain name for the purpose of selling the domain name registered to Complainant in violation of Policy 4(b)(i). Previous panels have found that offering to sell a confusingly similar domain name is evidence of bad faith registration and use under Policy 4(b)(i). See Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner"). The Panel, however, notes that there is no evidence of an actual offer to sell the domain name. The Panel further notes that it appears as though Complainant makes this argument based on Respondent’s actions in using Complainant’s marks to mislead Internet users. Complainant claims that Respondent is using the <swishasweetys.com> disputed domain name to divert Internet customers seeking Complainant’s website to an inactive website. Complainant further contends that Respondent is misleading the public into believing that there is an association with or endorsement from Complainant regarding Respondent’s <swishasweetys.com> domain name. The Panel notes that the screenshots Complainant provides of the disputed domain name’s resolving website support Complainant’s  additional claim that there are listings provided on the website, which redirect internet users to vendors of cigars and tobacco products as well as other related services. See Annex 6. The Panel notes that some of these links include; “Premium Products,” “Swisher Sweet: Deals,” “Swisher sweets: Cheap,” “Swishertown- swisher.com,” “Super Smoke Shop,” and “Swisher Sweets Cigars, Buy Discount Swisher Sweets.” The Panel presumes that these links are pay-per-click links used to earn revenue for Respondent. Previous panels have found this as evidence of an attempt to attract Internet users by creating a likelihood of confusion with a complainant’s mark. See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); see also TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be misled to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites.  Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”). Based on Complainant’s assertions and evidence, the Panel finds that Respondent acted in bad faith under Policy ¶ 4(b)(iv) when it registered and uses the disputed domain name for the purpose of attracting customers and financially profiting by creating a likelihood of confusion with Complainant’s mark.

 

Complainant alleges that Respondent must have had constructive and/or actual notice of Complainant's rights in the SWISHER SWEETIES mark prior to registration of the domain names because of Complainant's widespread use of the mark and its trademark registrations with the USPTO. While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel concludes that Respondent had actual notice of Complainant's mark and thus registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii).  Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).

DECISION

Having  established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <swishasweetys.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Tyrus R. Atkinson, Jr., Panelist

Dated:  October 30, 2012

 

 

 

 

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